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<title>Ask Dr. Copyright — Music for Political Purposes</title>
<link>https://garson-law.com/ask-dr-copyright-music-for-political-purposes/</link>
<comments>https://garson-law.com/ask-dr-copyright-music-for-political-purposes/#respond</comments>
<dc:creator><![CDATA[Lawrence Husick]]></dc:creator>
<pubDate>Mon, 22 Apr 2024 11:00:00 +0000</pubDate>
<category><![CDATA[Ask Dr. Copyright]]></category>
<category><![CDATA[Copyright]]></category>
<category><![CDATA[copyright]]></category>
<category><![CDATA[fair use]]></category>
<category><![CDATA[political use of music]]></category>
<guid isPermaLink="false">https://garson-law.com/?p=4000</guid>
<description><![CDATA[Dear Doc: I’ve heard that politicians who use music at their campaign appearances and in their Internet postings (Tweets, Memes, and other stuff) need to get permission from the music artists, and that sometimes, they don’t. What happens then? Signed,Dazed and Confused   Dear D&C:The basic rule of copyright is that unless use of a […]
The post <a href="https://garson-law.com/ask-dr-copyright-music-for-political-purposes/">Ask Dr. Copyright — Music for Political Purposes</a> first appeared on <a href="https://garson-law.com">Adam G. Garson, Esq. | Lipton, Weinberger & Husick</a>.]]></description>
<content:encoded><![CDATA[<div class="wp-block-image">
<figure class="alignleft"><img decoding="async" src="https://garson-law.com/wp-content/uploads/2015/04/copyright-Q-e1464985348338.jpg" alt=""/></figure></div>
Dear Doc: I’ve heard that politicians who use music at their campaign appearances and in their Internet postings (Tweets, Memes, and other stuff) need to get permission from the music artists, and that sometimes, they don’t. What happens then? Signed, Dazed and Confused   
Dear D&C: The basic rule of copyright is that unless use of a protected work is either excused as “fair use” or done with permission, then it is deemed an infringement of the exclusive rights of the copyright owner. Because the fair use exceptions do not include political campaigning, any candidate for office wanting to use a work, such as a song, should get a license from the owner. Much of the time, the owner is not the performer, but rather, is the music label, and the rights are managed by a third party such as ASCAP, BMI, and so on. Recently, we saw this in action when Donald Trump tweeted a meme that included the Nickelback song “Photograph”.
<figure class="wp-block-image is-resized"><img decoding="async" src="https://garson-law.com/wp-content/uploads/2019/10/TrumpTweet.jpeg" alt="using music for political purposes - donald trump tweet" style="width:840px;height:auto"/></figure>
After a complaint, the video that featured the song was blocked by Twitter, as can be seen above.The copyright complaint was made by Warner Music Inc., according to information posted in the <a rel="noreferrer noopener" href="https://www.lumendatabase.org" target="_blank">Lumen Database</a>, a project that tracks copyright complaints.     
The same requirement for a license to use music applies to public performances, such as the music played at a political rally. After his 2013 song “Happy” was used at a Trump rally in Indiana, composer Pharrell Williams issued a cease and desist letter to the campaign. Other music artists have filed similar demands of other political campaigns across the political spectrum. According to the British Newspaper, The Guardian, “Bands protesting against politicians is nothing new, but the lineup of musicians who have asked Trump to stop playing their songs alone is a Rock and Roll Hall of Fame on its own.” The Rolling Stones, REM, Adele, and Aerosmith have demanded that their music not be played by the <a rel="noreferrer noopener" href="https://qz.com/quartzy/1444115/all-the-songs-trump-has-been-asked-not-to-use-in-one-playlist/" target="_blank">Trump campaign</a>.
Other musicians have used other legal strategies. Steven Tyler of Aerosmith sent a cease-and-desist of his own, objecting to the use of “Livin’ on the Edge” at a Trump campaign rally, following a similar complaint three years earlier that the campaign ignored. “By using Livin’ On The Edge without our client’s permission, Mr Trump is falsely implying that our client, once again, endorses his campaign and/or his presidency, as evidenced by actual confusion seen from the reactions of our client’s fans all over social media,” the letter said.
This specifically violates Section 43 of the Lanham Act, as it ‘is likely to cause confusion, or to cause mistake, or to deceive as to the affiliation, connection, or association of such person with another person’.” The Lanham Act is the federal trademark statute.   
Often, a politician will comply with an artist’s request because the negative attention from a popular band is more trouble than continuing to play their song. But, in music, as with much else, Mr. Trump and his campaign often seems to be playing by their own rules. Trump still concludes almost every rally with the Rolling Stones’ “You Can’t Always Get What You Want”. The Doc agrees (with the song, if not with how it’s being used.)   
Need to issue a cease and desist or respond to one? Call the attorneys at LW&H. They’re really experienced on both counts. You’ll almost certainly get what you want. Unless you’re sending the notice to you-know-who.   Until next month,   
The “Doc” 
–Lawrence A. Husick, Esq.
*Originally posted on November 28, 2019The post <a href="https://garson-law.com/ask-dr-copyright-music-for-political-purposes/">Ask Dr. Copyright — Music for Political Purposes</a> first appeared on <a href="https://garson-law.com">Adam G. Garson, Esq. | Lipton, Weinberger & Husick</a>.]]></content:encoded>
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<item>
<title>Ask Dr. Copyright © About Innovation</title>
<link>https://garson-law.com/ask-dr-copyright-about-innovation/</link>
<comments>https://garson-law.com/ask-dr-copyright-about-innovation/#respond</comments>
<dc:creator><![CDATA[Lawrence Husick]]></dc:creator>
<pubDate>Thu, 18 Apr 2024 11:30:00 +0000</pubDate>
<category><![CDATA[Ask Dr. Copyright]]></category>
<category><![CDATA[Apple]]></category>
<category><![CDATA[innovation]]></category>
<guid isPermaLink="false">https://garson-law.com/?p=6712</guid>
<description><![CDATA[Dear Doc: For some time now, we have heard and read that Apple, Inc. has lost its famous ability to innovate. What does that mean, and do you agree? Signed, Your College Friend Who Refuses to Use Any Apple Products, Ever! Dear John: As you know, the Doc bought his first Apple computer in 1979 […]
The post <a href="https://garson-law.com/ask-dr-copyright-about-innovation/">Ask Dr. Copyright © About Innovation</a> first appeared on <a href="https://garson-law.com">Adam G. Garson, Esq. | Lipton, Weinberger & Husick</a>.]]></description>
<content:encoded><![CDATA[<div class="wp-block-image is-style-default">
<figure class="alignleft size-full"><a href="https://garson-law.com/wp-content/uploads/2015/04/copyright-Q-e1464985348338.jpg"><img decoding="async" width="100" height="143" src="https://garson-law.com/wp-content/uploads/2015/04/copyright-Q-e1464985348338.jpg" alt="Ask Dr. Copyright" class="wp-image-1697"/></a></figure></div>
Dear Doc:
For some time now, we have heard and read that Apple, Inc. has lost its famous ability to innovate. What does that mean, and do you agree?
Signed,
Your College Friend Who Refuses to Use Any Apple Products, Ever!
Dear John:
As you know, the Doc bought his first Apple computer in 1979 (and he still has that Apple] [+, and it still works!). He has owned countless Apple products since then, and now uses an iPhone, MacBook Pro, iMac, AppleTV, AirPods, HomePods, Apple Watch, and owns stock in Apple. That said, the Doc also met Apple founders Woz and Jobs (a few times each), and Steve Jobs was a supporter of the Doc’s first startup venture, Infonautics, Inc. The Doc also served as Apple’s first “Legal Fellow.” The Doc has first-hand knowledge about the history of innovation at Apple.
<div class="wp-block-image">
<figure class="alignright size-full"><a href="https://garson-law.com/wp-content/uploads/2024/04/Apple-innovation.png"><img decoding="async" width="250" height="150" src="https://garson-law.com/wp-content/uploads/2024/04/Apple-innovation.png" alt="Apple Inc." class="wp-image-6728"/></a></figure></div>
So why do we see published statements like, “Once considered a synonym of innovation and prowess, Apple Inc. is under mounting scrutiny over its ability to sustain the crown of ‘tech industry pioneers’. Co-founded by Legendary Tech. magnet, Late. Steve Jobs, the company made its mark with the famous slogan “<a href="https://www.youtube.com/watch?v=5sMBhDv4sik" target="_blank" rel="noopener" title="">Think Different</a>,” setting the stage for a series of groundbreaking products that reshaped entire industries. However, in recent years, Apple’s innovation prowess has come under fire and has made many of its loyal customers wonder – ‘<a href="https://www.linkedin.com/pulse/has-apple-lost-its-innovative-edge-closer-look-tech-giants-rawat/" target="_blank" rel="noopener" title="">Has their beloved brand lost its Innovative edge</a>?’”
The Doc teaches his students at the Johns Hopkins University Whiting School of Engineering that innovation is both a noun (“tools and toys”) and a verb: a process of <a href="https://www.fpri.org/article/2008/05/more-than-just-tools-and-toys-teaching-innovation/" target="_blank" rel="noopener" title="">creating added value</a>. While most people understand innovating by making new things, they fail to appreciate that creating value from investments of capital is the core of an innovative organization. Apple excels at both sides of the innovation equation and has managed to do so for a <a href="https://guides.loc.gov/this-month-in-business-history/april/apple-computer-founded" target="_blank" rel="noopener" title="">very long time</a>.
Being innovative, however, does not necessarily mean being first. They say that you can usually recognize a pioneer by the many arrows lodged in his back. “First mover advantage” is, in many cases, overrated, because to benefit from it, the innovator needs to overcome many risks: technology, production, market introduction, supply chain, and many more. Doing this requires lots of capital and a large supply of plain old luck. Apple rarely attempts to be the first in a product category, preferring to allow others to pave the way, and then designing its product to solve problems encountered by the pioneers.
There were personal computers before the Apple ][, but you had to <a href="https://americanhistory.si.edu/collections/nmah_334396" target="_blank" rel="noopener" title="">build your own</a> before you could plug it in and use it. There were computers with graphic user interfaces before the Macintosh (the “Computer for the Rest of Us”), but they cost $15,000 (<a href="https://interface-experience.org/objects/xerox-star-8010-information-system/" target="_blank" rel="noopener" title="">Xerox Star</a>) or $5,000 (<a href="https://computerhistory.org/blog/the-lisa-apples-most-influential-failure/" target="_blank" rel="noopener" title="">Apple Lisa</a>). There were laser printers before the LaserWriter, but no software that turned them into printing presses (<a href="https://personal.garrettfuller.org/blog/2021/05/24/aldus-pagemaker-a-look-at-early-desktop-publishing/" target="_blank" rel="noopener" title="">AppleWrite and PageMaker</a>). There were cellphones that could email before the iPhone, but they had <a href="https://www.illumy.com/blackberry-phone/" target="_blank" rel="noopener" title="">tiny keyboards</a> and no useful web browser or music player. In each case, what Apple added was a focus on how humans would use the technology to be more creative and more productive. This <a href="https://developer.apple.com/design/human-interface-guidelines" target="_blank" rel="noopener" title="">“human-centered design” philosophy</a> has always been key to Apple’s innovative success.
So, has Apple lost the ability to innovate? Hardly! Apple has, however, taught its competitors how to be better. Just as Windows was a copy of the MacOS, and gradually matured to be very successful (any version before 3.1 was, frankly, terrible), and Android is a copy of iOS (just look at the design PowerPoint from Samsung that was <a href="https://archive.org/details/436142-samsung-relative-evaluation-report-on-s1-iphone" target="_blank" rel="noopener" title="">evidence</a> in the lawsuit between Apple and that company to see how each icon and function was analyzed and copied, the competitive landscape is more innovative than ever.
By the way, with each new product that Apple introduces, it seems that the world has the <a href="https://www.yahoo.com/tech/s/read-hilariously-negative-reactions-original-iphone-announcement-173924562.html" target="_blank" rel="noopener" title="">same reaction</a>: “It’ll never work.” Just look at the press about Apple’s newest product, the VisionPro.  That response is best summed up in the Doc’s favorite quote about innovation, from a book about telegraphs by Abraham Edelkrantz, published in 1796:
<blockquote class="wp-block-quote is-layout-flow wp-block-quote-is-layout-flow">
It often happens, with regard to new inventions, that one part of the general public finds them useless and another part considers them impossible. When it becomes clear that the possibility and the usefulness can no longer be denied, most agree that the whole thing was fairly easy to discover and that they knew about it all along.
</blockquote>
So if you’re an innovator, give a shout to the attorneys at LW&H, each of whom is an innovator as well as a student of innovation. They can help to protect that value you create.
Until next month,
The “Doc”The post <a href="https://garson-law.com/ask-dr-copyright-about-innovation/">Ask Dr. Copyright © About Innovation</a> first appeared on <a href="https://garson-law.com">Adam G. Garson, Esq. | Lipton, Weinberger & Husick</a>.]]></content:encoded>
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</item>
<item>
<title>But Mom, Why is the Spider-Man Costume So Expensive?</title>
<link>https://garson-law.com/but-mom-why-is-the-spider-man-costume-so-expensive/</link>
<comments>https://garson-law.com/but-mom-why-is-the-spider-man-costume-so-expensive/#respond</comments>
<dc:creator><![CDATA[Lawrence Husick]]></dc:creator>
<pubDate>Mon, 15 Apr 2024 12:30:36 +0000</pubDate>
<category><![CDATA[Copyright]]></category>
<category><![CDATA[Trademark]]></category>
<guid isPermaLink="false">https://garson-law.com/blog/?p=780</guid>
<description><![CDATA[As the days grow shorter, it seems that the shorter people (we call them “kids”) start to want costumes and large bags the size of small dump trucks into which kindly neighbors intent on supporting the local dental association will deposit “treats.” You may have noticed that some costumes (for example, independent small-business marine entrepreneurs, […]
The post <a href="https://garson-law.com/but-mom-why-is-the-spider-man-costume-so-expensive/">But Mom, Why is the Spider-Man Costume So Expensive?</a> first appeared on <a href="https://garson-law.com">Adam G. Garson, Esq. | Lipton, Weinberger & Husick</a>.]]></description>
<content:encoded><![CDATA[<a href="https://garson-law.com/wp-content/uploads/2011/10/Halloween-Costumes.png"><img decoding="async" class="size-full wp-image-6744 alignleft" src="https://garson-law.com/wp-content/uploads/2011/10/Halloween-Costumes.png" alt="Halloween costumes" width="250" height="150" /></a>As the days grow shorter, it seems that the shorter people (we call them “kids”) start to want costumes and large bags the size of small dump trucks into which kindly neighbors intent on supporting the local dental association will deposit “treats.” You may have noticed that some costumes (for example, independent small-business marine entrepreneurs, native American leaders, Wiccans, and the like – political correctness is very important to us attorneys) are relatively inexpensive, while other name-brand Halloween costumes such as Spider-Man®, Batman®, Superman®, any Teenage Mutant Ninja Turtle®, Super Mario®, and Mickey Mouse® to name but a few, cost amounts that would bankrupt some small African nations. Why, you may wonder, is there this price disparity? (Or, if you’re like most in suburbia, you just pay it and hope that for a brief and shining moment, the tykes will be happy and quiet in the back of the SUV.)
<h2>Why the Price Difference?</h2>
Most of the price difference between generic costumes and the fancy recognizable characters may be attributed to what intellectual property lawyers (you didn’t think that this was just an article about Halloween, did you?) call “BRAND VALUE”. In other words, the companies that own the copyrights and trademarks in everything from Scooby Doo® to SpongeBob Squarepants® (and no, that is NOT a cute nickname for our law partner, Bob Yarbrough…) charge licensing fees to the costume manufacturers for the privilege of using their famous characters’ appearances. After all, these corporations have spent a great deal of time, money, and effort getting your kids to instantly recognize and imitate the characters (just ask a six-year-old what Squidward<img src="https://s.w.org/images/core/emoji/15.0.3/72x72/2122.png" alt="™" class="wp-smiley" style="height: 1em; max-height: 1em;" /> says, or which TransFormer® is the best.)
<h3>Making Your Own Costumes? Think Twice Before Posting Online</h3>
As a practical matter, if you make your own costumes, you don’t have to worry about paying royalties to the owners of the intellectual property. Beware, however, of posting that cute video showing your adorable homemade Buzz Lightyear® costume on YouTube…the trademark police may just get annoyed. Got an equally obtuse concern about intellectual property? Give the attorneys at LW&H a shout (but try not to use a catchphrase of a famous cartoon character…those are registered too.)
— Lawrence A. Husick, Esq.
*Originally posted on October 31, 2011The post <a href="https://garson-law.com/but-mom-why-is-the-spider-man-costume-so-expensive/">But Mom, Why is the Spider-Man Costume So Expensive?</a> first appeared on <a href="https://garson-law.com">Adam G. Garson, Esq. | Lipton, Weinberger & Husick</a>.]]></content:encoded>
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<slash:comments>0</slash:comments>
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<title>Too ‘Obvious’ for a Design Patents?</title>
<link>https://garson-law.com/too-obvious-for-a-design-patents/</link>
<comments>https://garson-law.com/too-obvious-for-a-design-patents/#respond</comments>
<dc:creator><![CDATA[Robert Yarbrough]]></dc:creator>
<pubDate>Thu, 11 Apr 2024 11:30:00 +0000</pubDate>
<category><![CDATA[Patent]]></category>
<guid isPermaLink="false">https://garson-law.com/?p=6714</guid>
<description><![CDATA[Designers Take Note – Designs can be too ‘Obvious’ for a Design Patent There are two types of patents* – utility patents and design patents. Utility patents address what something is and how it works. Design patents address how something looks. An example of a utility patent is a patent for a better mousetrap with a […]
The post <a href="https://garson-law.com/too-obvious-for-a-design-patents/">Too ‘Obvious’ for a Design Patents?</a> first appeared on <a href="https://garson-law.com">Adam G. Garson, Esq. | Lipton, Weinberger & Husick</a>.]]></description>
<content:encoded><![CDATA[<h2 class="wp-block-heading">Designers Take Note – Designs can be too ‘Obvious’ for a Design Patent</h2>
<div class="wp-block-image">
<figure class="alignleft size-full"><a href="https://garson-law.com/wp-content/uploads/2024/04/Harvey-Ball-smiley-face-1.png"><img loading="lazy" decoding="async" width="250" height="150" src="https://garson-law.com/wp-content/uploads/2024/04/Harvey-Ball-smiley-face-1.png" alt="Harvey Ball" class="wp-image-6737"/></a></figure></div>
There are two types of patents* – utility patents and design patents. Utility patents address what something is and how it works. Design patents address how something looks. An example of a utility patent is a patent for a better mousetrap with a new way of catching mice. An example of a design patent is a patent that protects how the mousetrap looks, say, for example, if it resembled a piece of cheese.
Today, our topic is design patents.
To receive a design patent, a design must be (a) novel and (b) non-obvious. Remember that design patents rely on the appearance of an object, not how it works, so we must be able to evaluate its appearance. Here’s how the <a href="https://supreme.justia.com/cases/federal/us/81/511/" target="_blank" rel="noopener" title="">USPTO and the courts</a> will determine whether a design is ‘novel’:
<blockquote class="wp-block-quote is-layout-flow wp-block-quote-is-layout-flow">
[I]f, in the eye of an ordinary observer, giving such attention as a purchaser usually gives, two designs are substantially the same, if the resemblance is such as to deceive such an observer, inducing him to purchase one supposing it to be the other . . . . (Emphasis supplied).
</blockquote>
This is known as the ‘ordinary observer test.’ In other words, if two designs are so similar that an ‘ordinary observer’ would mistake a later design for the earlier design, then the later design is not novel and is anticipated by the earlier design. In practical terms, that means the two designs must be very, very close, if not identical.
That’s the easy part. On to obviousness. 
In general, design patent ‘obviousness’ involves combining two or more earlier designs to create the later design, rendering the later design ‘obvious’ and not patentable.  
But wait a minute. Can’t every ornamental design be a combination of earlier design elements? Consider the smiley face, the 1963 creation by graphic artist Harvey Ball (that’s him in the image above). It’s a yellow circle, a couple of dots and a curved line or two – but by 1971, 50 million smiley face buttons were sold. Certainly, the smiley face design, made from old elements, was greater than the sum of its parts.
So how to determine whether the sum of old design elements renders a new design obvious and not patentable?
For many years, the courts have applied what’s known as the <a href="https://casetext.com/case/in-re-rosen-2" target="_blank" rel="noopener" title="">Rosen</a> and <a href="https://law.resource.org/pub/us/case/reporter/F3/101/101.F3d.100.96-1119.html" target="_blank" rel="noopener" title="">Durling</a> tests, after the parties in two court cases.  Under the Rosen and Durling test, the USPTO (or a court) must find a prior design that is “basically the same as the claimed design” when considering the design as a whole.  If such a prior design exists, then the USPTO or the court will consider whether an “ordinary designer” would combine a second prior design to the ‘basically the same’ reference to come up with the new design.
In practical terms, the USPTO and the courts are reluctant to conclude that a prior design is “basically the same” as a new design, so design patents and applications have been largely immune from obviousness issues. As a result, design patents have become more important to innovators as utility patents have become harder to enforce.
That’s about to change. Some years ago, the <a href="https://supreme.justia.com/cases/federal/us/550/398/" target="_blank" rel="noopener" title="">U.S. Supreme Court</a> seriously messed with the issue of obviousness in the area of utility patents, rejecting rigid formulae for determining obviousness and concluding that courts and patent examiners must follow a loose, flexible, more of an ‘I’ll know it when I see it’ approach to utility patent obviousness. Those loose, flexible criteria for obviousness have never been applied to design patents – until now, that is.
The case is LKQ Corp. v GM, which is currently pending before the Federal Circuit.  GM produces cars and obtained a design patent for the fender of one of its cars.  LKQ is a manufacturer of replacement fenders and wants to produce copies of GM fenders freely, without worrying about GM’s design patents. A panel of three judges at the <a href="https://cafc.uscourts.gov/opinions-orders/21-2348.OPINION.1-20-2023_2066528.pdf" target="_blank" rel="noopener" title="">Federal Circuit rejected</a> LKQ’s challenge, concluding that the prior design presented by LKQ was not ‘basically the same’ as the GM design under Rosen/Durling and lamenting that the panel could not change Federal Circuit precedent without the participation of all of the Federal Circuit judges (there are twelve in total).
Well, all twelve judges are now participating and heard arguments earlier this year.  It’s clear from the judge’s questions that the law is about to change, and in a way not beneficial to designers and design patent owners.  Exactly what the new law will be remains to be seen.  We expect a decision this summer and will keep you posted.
*Actually, there are three. Plant patents are outside the scope of this article.The post <a href="https://garson-law.com/too-obvious-for-a-design-patents/">Too ‘Obvious’ for a Design Patents?</a> first appeared on <a href="https://garson-law.com">Adam G. Garson, Esq. | Lipton, Weinberger & Husick</a>.]]></content:encoded>
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<title>Non-Fungible Tokens Revisited</title>
<link>https://garson-law.com/non-fungible-tokens-revisited/</link>
<dc:creator><![CDATA[Adam Garson]]></dc:creator>
<pubDate>Thu, 04 Apr 2024 11:30:00 +0000</pubDate>
<category><![CDATA[Intellectual Property]]></category>
<category><![CDATA[Internet Law]]></category>
<category><![CDATA[Trademark]]></category>
<category><![CDATA[NFT]]></category>
<guid isPermaLink="false">https://garson-law.com/?p=6716</guid>
<description><![CDATA[Remember NFTs (“Non-Fungible Tokens”)? As a reminder, an NFT is a type of digital asset that represents ownership or proof of authenticity of a unique item or piece of content, such as artwork, music, videos, or collectibles, using blockchain technology. Unlike cryptocurrencies like Bitcoin, which are fungible and can be exchanged on a one-to-one basis, NFTs […]
The post <a href="https://garson-law.com/non-fungible-tokens-revisited/">Non-Fungible Tokens Revisited</a> first appeared on <a href="https://garson-law.com">Adam G. Garson, Esq. | Lipton, Weinberger & Husick</a>.]]></description>
<content:encoded><![CDATA[<div class="wp-block-image">
<figure class="alignright size-full"><a href="https://garson-law.com/wp-content/uploads/2024/04/Non-Fungible-Tokens.png"><img loading="lazy" decoding="async" width="250" height="150" src="https://garson-law.com/wp-content/uploads/2024/04/Non-Fungible-Tokens.png" alt="" class="wp-image-6719"/></a></figure></div>
Remember NFTs (“Non-Fungible Tokens”)? As a reminder, an NFT is a type of digital asset that represents ownership or proof of authenticity of a unique item or piece of content, such as artwork, music, videos, or collectibles, using blockchain technology. Unlike cryptocurrencies like Bitcoin, which are fungible and can be exchanged on a one-to-one basis, NFTs are unique and cannot be exchanged on a like-for-like basis, making each NFT distinct and irreplaceable. In the early 2020s, NFTs were a hugely popular blockchain mechanism for storing digital assets and ensuring the authenticity of digital artwork. During that period, we wrote about NFTs as they pertained to <a href="https://garson-law.com/trademarks-and-nfts-more-headaches/" target="_blank" rel="noopener" title="">trademarks</a> and <a href="https://garson-law.com/ask-dr-copyright-about-nfts/" target="_blank" rel="noopener" title="">copyrights</a>. At that time, the NFT market exploded. Literally, billions of dollars in digital assets were bought and sold. <a href="https://www.forbes.com/advisor/au/investing/cryptocurrency/are-nfts-dead/#:~:text=Has%20the%20value%20of%20NFTs,historical%20significance%20or%20high%20demand." target="_blank" rel="noopener" title="">Forbes</a> recently wrote about the rise of NFTs and their subsequent fall, which the author attributed to simple supply and demand. “The realization that not all NFTs would retain their value or promise significant returns started to set in, leading to decreased buyer interest and market prices.” The fallen NFT values, according to the author, were “compounded by the overall decline in the crypto market.”
According to the <a href="https://www.forbes.com/advisor/au/investing/cryptocurrency/are-nfts-dead/#:~:text=Has%20the%20value%20of%20NFTs,historical%20significance%20or%20high%20demand." target="_blank" rel="noopener" title="">Forbes article</a>, some NFTs have retained their value and still hold “appeal and potential.” More importantly, the underlying blockchain technology still has serious applications for digital rights management and authentication of assets. Indeed, the United States Patent and Trademark Office and the United States Copyright Office just released their <a href="https://garson-law.com/wp-content/uploads/2024/03/Joint-USPTO-USCO-Report-on-NFTs-and-Intellectual-Property.pdf" target="_blank" rel="noopener" title="">joint report to Congress</a> on “Non-Fungible Tokens and Intellectual Property” (“Joint Report”). It’s a lengthy report that provides a readable history and explanation of NFTs. Rather than summarize the whole report, let’s take a look at the section on trademarks.
The Joint Report discusses the evolving role of NFTs in the trademark ecosystem, federal registration of trademarks involving NFTs, trademark infringement and enforcement, and recommendations:
1. Evolving Role of NFTs in the Trademark Ecosystem
Trademarks are source identifiers. As such, the Joint Report points out the traditional role of trademarks in the NFT system: “[t]rademarks can be used to indicate the source of the underlying assets associated with the NFTs, such as digital art, video clips of iconic sports moments, or physical shoes.” This observation is an extension of how trademarks function in the non-digital world. More importantly, the Joint Report notes that the NFT marketplace provides new opportunities for brand owners to expand, promote and strengthen their brands. In light of the downturn of the NFT market discussed in the Forbes article, referred to above, these new opportunities will be slow to develop.
According to the Joint Report, NFTs may provide an important mechanism for verifying or certifying the source of physical objects not just because of the application of a trademark but because the immutable record provided by blockchain technology acts as a trustworthy source of information about the underlying product. The Joint Report speculates that NFTs may be useful in the trademark registration process by providing, for example, trustworthy evidence of dates of first use. Brand owners, according to the Joint Report, could also use NFTs and <a href="https://www.spiceworks.com/tech/innovation/articles/what-are-smart-contracts/#:~:text=A%20smart%20contract%20is%20defined,programming%20languages%20such%20as%20Solidity." target="_blank" rel="noopener" title="">smart contracts</a> to manage trademark rights.
2. Federal Registration of Trademarks Involving NFTs
<div class="wp-block-image is-style-default">
<figure class="alignright size-full is-resized"><a href="https://garson-law.com/wp-content/uploads/2022/04/BirkenBagNFT.jpeg"><img loading="lazy" decoding="async" width="980" height="980" src="https://garson-law.com/wp-content/uploads/2022/04/BirkenBagNFT.jpeg" alt="" class="wp-image-5299" style="width:190px;height:auto" srcset="https://garson-law.com/wp-content/uploads/2022/04/BirkenBagNFT.jpeg 980w, https://garson-law.com/wp-content/uploads/2022/04/BirkenBagNFT-300x300.jpeg 300w, https://garson-law.com/wp-content/uploads/2022/04/BirkenBagNFT-150x150.jpeg 150w, https://garson-law.com/wp-content/uploads/2022/04/BirkenBagNFT-768x768.jpeg 768w" sizes="(max-width: 980px) 100vw, 980px" /></a></figure></div>
The Joint Report explores guidance and recommendations about the proper identification of goods and services and the appropriate evidence for trademark use pertaining to NFT-related goods and services in the trademark registration process. Most important, however, is the Joint Report’s discussion of the scope of protection afforded by U.S. trademark registration for NFTs. In particular, there is uncertainty as to whether the USPTO and federal courts when conducting likelihood of confusion analyses will consider physical goods offered outside of the NFT markets as similar to digital versions of those goods associated with the NFT markets. The Joint Report noted that this may not be a concern in light of the <a href="https://garson-law.com/wp-content/uploads/2024/03/HERMES-NFTS-LAWSUIT-pi.pdf" target="_blank" rel="noopener" title="">MetaBirkins decision</a>, in which the federal court made a finding of trademark infringement by considering NFT-related “depictions of physical products to be sufficiently similar to physical products not associated with NFTs to substantiate a finding of likelihood of confusion.” If you’re interested in the MetaBirkins case, we also discuss it in a <a href="https://garson-law.com/trademarks-and-nfts-more-headaches/" target="_blank" rel="noopener" title="">previous newsletter article</a>.
3. Trademark Infringement and Enforcement
According to the Joint Report, trademark misappropriation and infringement frequently occur on NFT platforms. In fact, it may be one of the most common forms of trademark infringement. Concerns were raised with respect to the lack of controlling judicial precedents on the issue of whether “trademark registration for physical goods can be enforced against use of that mark on similar digital goods tied to NFTs.”
Concern was also raised as to whether NFT platforms will take down unauthorized uses of the mark used in connection with digital goods “based on a trademark registration for similar physical goods.” Another area of concern was the use of registered trademarks in blockchain-based domain names for which there is no dispute resolution mechanism as there is for <a href="https://www.icann.org/resources/pages/help/dndr/udrp-en#:~:text=All%20registrars%20must%20follow%20the,or%20transfer%20a%20domain%20name." target="_blank" rel="noopener" title="">Internet domains</a>.
4. Recommendations
Among the recommendations in the Joint Report were for NFT platforms to adopt best practices and protocols to prevent trademark infringement and for the USPTO to provide NFT-specific guidance to trademark-examining attorneys and applicants. Such steps would help maintain predictability and consistency in the registration process as well as assist registrants and applicants in making informed portfolio management decisions.
Whether the Joint Report will motivate Congress to legislate in this area is anybody’s guess. Given the decline in the NFT market, it’s not likely to be a top priority. We will continue to follow this interesting topic.The post <a href="https://garson-law.com/non-fungible-tokens-revisited/">Non-Fungible Tokens Revisited</a> first appeared on <a href="https://garson-law.com">Adam G. Garson, Esq. | Lipton, Weinberger & Husick</a>.]]></content:encoded>
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<title>Ask Dr. Copyright © About Infringement</title>
<link>https://garson-law.com/ask-dr-copyright-about-infringement/</link>
<dc:creator><![CDATA[Lawrence Husick]]></dc:creator>
<pubDate>Thu, 21 Mar 2024 11:30:00 +0000</pubDate>
<category><![CDATA[Ask Dr. Copyright]]></category>
<category><![CDATA[trademark infringement]]></category>
<guid isPermaLink="false">https://garson-law.com/?p=6675</guid>
<description><![CDATA[Dear Doc: How can a person tell if one stuffed toy infringes the intellectual property rights in another stuffed toy?  Asking for a friend. Signed,J. Sinestvet Dear J: When the Doc was about to graduate from law school, he was interviewed for a job at a prominent Philadelphia patent law firm. The Doc has a […]
The post <a href="https://garson-law.com/ask-dr-copyright-about-infringement/">Ask Dr. Copyright © About Infringement</a> first appeared on <a href="https://garson-law.com">Adam G. Garson, Esq. | Lipton, Weinberger & Husick</a>.]]></description>
<content:encoded><![CDATA[<div class="wp-block-image is-style-default">
<figure class="alignleft size-full is-resized"><a href="https://garson-law.com/wp-content/uploads/2015/04/copyright-Q-e1464985348338.jpg"><img loading="lazy" decoding="async" width="100" height="143" src="https://garson-law.com/wp-content/uploads/2015/04/copyright-Q-e1464985348338.jpg" alt="Ask Dr. Copyright" class="wp-image-1697" style="width:94px;height:auto"/></a></figure></div>
<a></a>Dear Doc: How can a person tell if one stuffed toy infringes the intellectual property rights in another stuffed toy?  Asking for a friend. Signed, J. Sinestvet
<div class="wp-block-image">
<figure class="alignright size-full"><a href="https://garson-law.com/wp-content/uploads/2024/03/Copyright-of-plush-toys.png"><img loading="lazy" decoding="async" width="250" height="150" src="https://garson-law.com/wp-content/uploads/2024/03/Copyright-of-plush-toys.png" alt="copyright infringement of stuffed animals" class="wp-image-6696"/></a></figure></div>

Dear J:
When the Doc was about to graduate from law school, he was interviewed for a job at a prominent Philadelphia patent law firm. The Doc has a degree in chemistry, had done graduate studies in microprocessor computer systems, and had worked in a patent law practice for two years. During the interview, the senior partner at the law firm abruptly marched the Doc out of his office and down the hall, and disappeared into a walk-in closet. The senior attorney emerged brandishing two stuffed mouse toys, which he held up to the Doc’s face and demanded, “INFRINGEMENT???”
The Doc, being a chemist, computer guy, and general technology nerd, replied, “How should I know?” Needless to say, the Doc did not get the job!
Even today, the Doc still has trouble understanding the plush (that’s what the toy folks call them) toy wars. Case in point: <a href="https://www.cnn.com/2024/02/15/business/squishmallow-build-a-bear-legal-battle-knock-offs/index.html" target="_blank" rel="noreferrer noopener">Squishmallows owner Kelly Toys is taking Build-A-Bear to court</a>. Both Kelly Toys and Build-A-Bear filed lawsuits on the same day after Build-A-Bear started selling its Skoosherz line of plushies. (<a href="https://dockets.justia.com/docket/missouri/moedce/4:2024cv00211/209644" target="_blank" rel="noreferrer noopener">Kelly Toys Holdings LLC, et al. v. Build-A-Bear Workshop Inc., Case No. 2:24-cv-01169, in the U.S. District Court for the Central District of California</a> and <a href="https://www.pacermonitor.com/public/case/52304995/BuildABear_Workshop,_Inc_v_Kelly_Toys_Holdings,_LLC_et_al" target="_blank" rel="noreferrer noopener">Build-A-Bear Workshop Inc. v. Kelly Toys Holdings LLC, et al., Case No. 4:24-cv-00211</a>, in the U.S. District Court for the Eastern District of Missouri.) For Kelly Toys, the problem is that Skoosherz look too much like its Squishmallows.
Kelly Toys filed its trademark infringement case in California, while Build-A-Bear filed a declaratory judgment of invalidity of trade dress case in Missouri. Kelly Toys outlined the Squishmallows history: They were released in 2016 with distinctive designs — they’re oval, usually animals, and have cute faces. Most importantly, they’re very soft and squishable. (Kelly Toys, by the way, is owned by Jazwares, which acquired the Squishmallow maker in 2020. Jazwares itself is owned by Berkshire Hathaway.) They were one of the top-selling toys of 2022. The company alleged that its Squishmallows line, of which there are more than 3,000, made $200 million in 2022, a 300% increase above the prior year. So, when Build-A-Bear first revealed its Skoosherz line, the first thing people did was compare them to Squishmallows.
<div class="wp-block-image is-style-default">
<figure class="aligncenter size-full is-resized"><a href="https://garson-law.com/wp-content/uploads/2024/02/PastedGraphic-1.png"><img loading="lazy" decoding="async" width="936" height="748" src="https://garson-law.com/wp-content/uploads/2024/02/PastedGraphic-1.png" alt="" class="wp-image-6664" style="width:328px;height:auto" srcset="https://garson-law.com/wp-content/uploads/2024/02/PastedGraphic-1.png 936w, https://garson-law.com/wp-content/uploads/2024/02/PastedGraphic-1-300x240.png 300w, https://garson-law.com/wp-content/uploads/2024/02/PastedGraphic-1-768x614.png 768w" sizes="(max-width: 936px) 100vw, 936px" /></a></figure></div>
You can see why from the photo, no? Build-A-Bear said in its lawsuit that they aren’t copycats — they’re round, pillow-like versions of its own original plush toys.  Noting that Build-A-Bear hired the same Chinese factory that manufactures Squishmallows, Kelly Toys asserts:
<blockquote class="wp-block-quote is-layout-flow wp-block-quote-is-layout-flow">
Rather than competing fairly in the marketplace by creating its own unique concepts and product lines, Defendant Build-A-Bear, a company worth over $300 million, decided that it would be easier to simply copy, imitate, and profit off the popularity and goodwill of Squishmallows, all in the hopes of confusing consumers into buying its products instead of Squishmallows.
</blockquote>
On the other hand, Build-A-Bear lawyers wrote. “From a toy designer’s perspective, each of these claimed trade dress features is necessary to either depict the various characters or animals, or is necessary to create this category of pillow-type plush that is currently trending.” 
Kelly Toys has a history of litigating over its Squishmallows line, including suits against Tee Turtle’s Flip-A-Mallows toys, Beanie Babies maker Ty for its Puffies and Squish-a-Boos, and Dan-Dee International for its Squishy line. Several of these were dismissed, Build-A-Bear’s lawyers said. Others were settled, according to court records. Several lawsuits against individual stores remain pending.
INFRINGEMENT??? The Doc still, more than 40 years later, has no idea what infringes what. But the attorneys at LW&H can help you to sort it all out. Give them a call.
Until next month,
The “Doc”
— Lawrence A. Huisck, Esq.The post <a href="https://garson-law.com/ask-dr-copyright-about-infringement/">Ask Dr. Copyright © About Infringement</a> first appeared on <a href="https://garson-law.com">Adam G. Garson, Esq. | Lipton, Weinberger & Husick</a>.]]></content:encoded>
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<title>APPLE v SAMSUNG – Design Patent Law Moves Closer to Trademark Law</title>
<link>https://garson-law.com/apple-v-samsung-design-patent-law-moves-closer-to-trademark-law/</link>
<dc:creator><![CDATA[Adam Garson]]></dc:creator>
<pubDate>Mon, 18 Mar 2024 13:00:17 +0000</pubDate>
<category><![CDATA[Intellectual Property]]></category>
<category><![CDATA[Patent]]></category>
<category><![CDATA[Trademark]]></category>
<category><![CDATA[Design Patents]]></category>
<guid isPermaLink="false">https://garson-law.com/blog/?p=927</guid>
<description><![CDATA[A ‘design patent’ is a monopoly granted by the government to make, use and sell a product having a particular appearance. Design patents protect how a product looks, not what it does. A person who copies a product protected by a patent, including a product protected by a design patent, will be ordered to stop […]
The post <a href="https://garson-law.com/apple-v-samsung-design-patent-law-moves-closer-to-trademark-law/">APPLE v SAMSUNG – Design Patent Law Moves Closer to Trademark Law</a> first appeared on <a href="https://garson-law.com">Adam G. Garson, Esq. | Lipton, Weinberger & Husick</a>.]]></description>
<content:encoded><![CDATA[<a href="https://garson-law.com/wp-content/uploads/2012/05/Apple-v-Samsung.png"><img loading="lazy" decoding="async" class="size-full wp-image-6683 alignleft" src="https://garson-law.com/wp-content/uploads/2012/05/Apple-v-Samsung.png" alt="smart phones - apple v samsung" width="250" height="150" /></a>A ‘design patent’ is a monopoly granted by the government to make, use and sell a product having a particular appearance. Design patents protect how a product looks, not what it does. A person who copies a product protected by a patent, including a product protected by a design patent, will be ordered to stop infringing by a court only if the patent owner can demonstrate that the patent owner will suffer ‘irreparable harm’ due to the infringement that cannot be compensated by money damages. Such a court ‘injunction’ against an infringer is difficult to obtain under this standard.
On the other hand, a ‘trademark’ indicates the source of a particular type of goods. If a trademark becomes ‘famous’ (for example, Coca-Cola®) then a court will order a trademark infringer not to use the famous trademark for other types of goods if the use will ‘dilute’ the famous trademark; that is, if the use will reduce the stature of the famous trademark in the eyes of the public. It is easier to obtain an injunction stopping infringement under the famous trademark standard than under the patent standard.
Apple and Samsung are in a worldwide battle over the alleged copying of Apple’s patented smartphone and tablet computer designs by Samsung. In a <a href="http://r20.rs6.net/tn.jsp?e=001pFmErevu25m11enG2ZBezgsTazB5ZWghc601FRAP0WfajRRkZZZwWs7Mp4m0ggDTXr1fFB3wECCqP2wjIBY6MqFhV_TLkinphYVZmvufV73f51laW7YGY-a1VT81hSTT0-c93bsWVcDu1gCs_eaDEOKSb46jy9p7xOsRnVtyvnDdF6pjP8v0Fg==" target="_blank" rel="noopener" shape="rect">case</a> before the Federal Circuit Court of Appeals, Apple argued that Samsung should be enjoined from selling its Galaxy smartphones because Samsung’s copying of the patented Apple design amounts to ‘design dilution.’ The argument is that Apple is ‘irreparably harmed’ for purposes of a preliminary injunction because Samsung’s product will ‘dilute’ the Apple design in the eyes of the public. This argument blends the trademark concept of dilution into patent law. The trial court rejected the argument for lack of evidence. The Federal Circuit affirmed the trial court’s conclusion that the argument was not supported by evidence, but concluded that it “would have been improper” to reject the argument outright. The Federal Circuit Court’s decision leaves Apple free to renew the argument with more evidence when the case comes to trial.
The Apple v Samsung case blurs the distinction between trademark and design patent law and potentially will ease the burden of a design patent owner in stopping an infringer.
— Robert Yarbrough, Esq.
*Originally posted on May 31, 2012The post <a href="https://garson-law.com/apple-v-samsung-design-patent-law-moves-closer-to-trademark-law/">APPLE v SAMSUNG – Design Patent Law Moves Closer to Trademark Law</a> first appeared on <a href="https://garson-law.com">Adam G. Garson, Esq. | Lipton, Weinberger & Husick</a>.]]></content:encoded>
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<title>When and Why are Inventions ‘Obvious’</title>
<link>https://garson-law.com/when-and-why-are-inventions-obvious/</link>
<dc:creator><![CDATA[Robert Yarbrough]]></dc:creator>
<pubDate>Thu, 14 Mar 2024 11:30:00 +0000</pubDate>
<category><![CDATA[Patent]]></category>
<category><![CDATA[Obviousness]]></category>
<guid isPermaLink="false">https://garson-law.com/?p=6667</guid>
<description><![CDATA[Maybe We’ll Actually Receive an Explanation from the USPTO The USPTO had a lot of patent examiners (8,568 to be exact) reviewing a lot of patent applications (462,000 new applications received last year).  Those examiners make thousands of determinations every day as to whether inventions are patentable or not.  Aside from forms, wording, fees, and whether […]
The post <a href="https://garson-law.com/when-and-why-are-inventions-obvious/">When and Why are Inventions ‘Obvious’</a> first appeared on <a href="https://garson-law.com">Adam G. Garson, Esq. | Lipton, Weinberger & Husick</a>.]]></description>
<content:encoded><![CDATA[<h2 class="wp-block-heading">Maybe We’ll Actually Receive an Explanation from the USPTO</h2>
<div class="wp-block-image">
<figure class="alignleft size-full is-resized"><a href="https://garson-law.com/wp-content/uploads/2023/12/utility-and-design-patents.png"><img loading="lazy" decoding="async" width="250" height="150" src="https://garson-law.com/wp-content/uploads/2023/12/utility-and-design-patents.png" alt="utility and design patents" class="wp-image-6512" style="width:222px;height:auto"/></a></figure></div>
The USPTO had a lot of patent examiners (<a href="https://www.uspto.gov/sites/default/files/documents/USPTOFY23AFR.pdf" target="_blank" rel="noreferrer noopener">8,568 to be exact</a>) reviewing a lot of patent applications (462,000 new applications received <a href="https://www.uspto.gov/sites/default/files/documents/USPTOFY23AFR.pdf" target="_blank" rel="noreferrer noopener">last year</a>).  Those examiners make thousands of determinations every day as to whether inventions are patentable or not.  Aside from forms, wording, fees, and whether the invention is of a type that is even can be the subject of a patent, the examiners make their decisions based on three criteria.  To paraphrase:
(a) Does the invention have ‘<a href="https://www.govinfo.gov/content/pkg/USCODE-2022-title35/pdf/USCODE-2022-title35-partII-chap10-sec101.pdf" target="_blank" rel="noreferrer noopener">utility</a>;’ that is, does it do something? (b) Is the invention ‘<a href="https://www.govinfo.gov/content/pkg/USCODE-2022-title35/pdf/USCODE-2022-title35-partII-chap10-sec102.pdf" target="_blank" rel="noreferrer noopener">novel</a>;’ that is, has exactly the same invention been done before? (c) Is the invention ‘<a href="https://www.govinfo.gov/content/pkg/USCODE-2022-title35/pdf/USCODE-2022-title35-partII-chap10-sec103.pdf" target="_blank" rel="noreferrer noopener">non-obvious</a>;’ that is, would the invention be obvious to an imaginary person “having ordinary skill in the art?”
An invention must pass all three criteria to qualify for a patent. Criteria (a) and (b) are fairly straightforward – either the invention does something or it doesn’t, and either the invention has been done before or it hasn’t.  The third criterion is the problem.  Note that the definition of ‘obvious’ (created by Congress) includes the defined term – an invention is ‘obvious’ if it’s obvious.  Not helpful. 
In the absence of meaningful guidance from Congress, the courts have stepped in, notably the <a href="https://supreme.justia.com/cases/federal/us/550/398/" target="_blank" rel="noreferrer noopener">U.S. Supreme Court</a> in 2007.  The Supremes concluded that the analysis of whether an invention is ‘obvious’ must be flexible and consider all angles, effectively punting the question back to the lower courts. However, the Supreme Court did say that “…[t]o facilitate review, this [obviousness] analysis must be made explicit.”
Seventeen years later, there have been many lower court decisions on obviousness, and this week the USPTO issued <a href="https://www.govinfo.gov/content/pkg/FR-2024-02-27/pdf/2024-03967.pdf" target="_blank" rel="noreferrer noopener">guidance to patent examiners</a> summarizing those decisions and instructing patent examiners on how they should make decisions on obviousness. Remember that the USPTO is merely summarizing conclusions of existing court decisions.  It’s not making new regulations or other new laws. Some of the highlights:
<ul>
<li>In perhaps the most important statements in the guidance, the USPTO reiterates that “[t]he key to supporting any [obviousness] rejection is the clear articulation of the reasons(s) why the claimed invention would have been obvious. … Although this approach is flexible, a proper obviousness rejection still requires the [examiner] to provide adequate analysis based on evidentiary support.”  Hopefully, this will spur the USPTO to require examiners to actually come up with reasons why an invention is obvious, rather than simply making conclusory statements.</li>
</ul>
Other highlights:
<ul>
<li>In deciding whether a new invention made from a combination of old elements is obvious and hence unpatentable, the examiner must consider any evidence presented of what the imaginary ‘person having ordinary skill’ would know and consider the creativity of such a person.</li>
<li>In deciding whether the artificial ‘person having ordinary skill’ would combine two (or more) prior art references to find the invention obvious, the examiner may consider reasons to combine the references, such as market forces, design incentives, ‘interrelated teachings of multiple patents,’ and any need or problem known in the field.</li>
<li>The examiner can fill gaps in the prior art by asserting common sense and common knowledge of the artificial ‘persons having ordinary skill.’  However, “…‘common sense’ – whether to supply motivation to combine or a missing limitation – cannot  be used as a wholesale substitute for reasoned analysis and evidentiary support” for an obviousness rejection.</li>
</ul>
— Robert Yarbrough, Esq.The post <a href="https://garson-law.com/when-and-why-are-inventions-obvious/">When and Why are Inventions ‘Obvious’</a> first appeared on <a href="https://garson-law.com">Adam G. Garson, Esq. | Lipton, Weinberger & Husick</a>.]]></content:encoded>
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<title>‘Trade Names’ or ‘Trademarks’?</title>
<link>https://garson-law.com/trade-names-or-trademarks/</link>
<dc:creator><![CDATA[Adam Garson]]></dc:creator>
<pubDate>Thu, 07 Mar 2024 12:30:00 +0000</pubDate>
<category><![CDATA[Trademark]]></category>
<category><![CDATA[Uncategorized]]></category>
<category><![CDATA[trade names]]></category>
<category><![CDATA[tradenames]]></category>
<guid isPermaLink="false">https://garson-law.com/?p=6665</guid>
<description><![CDATA[Do you know what distinguishes a trade name from a trademark? Clients frequently ask us to file a trademark application for the name of their company without any understanding of whether the company name is being used as a trademark. So, what is the difference? To put it simply, a trade name under section 45 of the […]
The post <a href="https://garson-law.com/trade-names-or-trademarks/">‘Trade Names’ or ‘Trademarks’?</a> first appeared on <a href="https://garson-law.com">Adam G. Garson, Esq. | Lipton, Weinberger & Husick</a>.]]></description>
<content:encoded><![CDATA[<div class="wp-block-image">
<figure class="alignleft size-full is-resized"><a href="https://garson-law.com/wp-content/uploads/2024/03/trade-name-vs-trademark.png"><img loading="lazy" decoding="async" width="250" height="150" src="https://garson-law.com/wp-content/uploads/2024/03/trade-name-vs-trademark.png" alt="Hi-Tech Pharmaceuticals" class="wp-image-6689" style="width:250px;height:auto"/></a></figure></div>
Do you know what distinguishes a trade name from a trademark? Clients frequently ask us to file a trademark application for the name of their company without any understanding of whether the company name is being used as a trademark. So, what is the difference? To put it simply, a trade name under <a href="https://www.law.cornell.edu/uscode/text/15/1127" target="_blank" rel="noreferrer noopener">section 45 of the Trademark Act</a> is “any name being used by a person to identify his or her business or vocation.” Trade names are not registrable with the USPTO. Trademarks, on the other hand, under Section 45, means “any word, name, symbol, or device, or any combination thereof … used… to identify and distinguish his or her goods, including a unique product, from those manufactured or sold by others and to indicate the source of those goods, even if that source is unknown.” The same definition applies to services.
The distinction between the trademark and trade name, however, is not so clear when you consider that a trade name can be used as a trademark so long as it is used in a trademark sense, that is, to distinguish the owner’s goods and to indicate their source. The distinction is easier said than done, which, as you may imagine, may be a contentious issue before the Trademark, Trial and Appeal Board (TTAB). 
Take for example the recent case of <a href="https://garson-law.com/wp-content/uploads/2024/02/ttabvue-88291540-EXA-12.pdf" target="_blank" rel="noreferrer noopener">Hi-Tech Pharmaceuticals, Inc.</a> (“Hi-Tech”), which sought registration of the mark “EXPERIMENTAL AND APPLIED SCIENCES” for dietary and nutritional supplements. To prove use in commerce, Hi-Tech submitted labels of its products pointing to the use of its trademark on the reverse side of a bottle. Here is an image of one label:
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<figure class="aligncenter size-full is-resized"><a href="https://garson-law.com/wp-content/uploads/2024/02/Label-1.png"><img loading="lazy" decoding="async" width="509" height="271" src="https://garson-law.com/wp-content/uploads/2024/02/Label-1.png" alt="" class="wp-image-6661" style="width:371px;height:auto" srcset="https://garson-law.com/wp-content/uploads/2024/02/Label-1.png 509w, https://garson-law.com/wp-content/uploads/2024/02/Label-1-300x160.png 300w" sizes="(max-width: 509px) 100vw, 509px" /></a></figure></div>
Note that “EXPERIMENTAL AND APPLIED SCIENCES” appears in bold above its street address and other contact information. The Examining Attorney rejected the specimen on the basis that the “proposed mark functions merely as a trade name and does not function as a trademark.” Hi-Tech submitted the following substitute specimen, which the Examining Attorney also rejected:
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<figure class="aligncenter size-full"><a href="https://garson-law.com/wp-content/uploads/2024/02/label-2.png"><img loading="lazy" decoding="async" width="372" height="113" src="https://garson-law.com/wp-content/uploads/2024/02/label-2.png" alt="" class="wp-image-6662" srcset="https://garson-law.com/wp-content/uploads/2024/02/label-2.png 372w, https://garson-law.com/wp-content/uploads/2024/02/label-2-300x91.png 300w" sizes="(max-width: 372px) 100vw, 372px" /></a></figure></div>
Upon appeal to the TTAB, the Board recognized that the difference between a trademark and a trade name is often difficult to determine and “often is nebulous in character.” To make the determination of whether a proposed trademark is a trade name, it must be determined “from the manner in which the name is used and the probable impact on purchasers and prospective purchasers.” In this instance, the Board considered Applicant’s use of its full corporate name, capitalization of its name, the lettering or font style, and whether it uses contrasting colors, all of which would affect the impact on purchasers. The Board concluded that
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each of the specimens shows the proposed mark EXPERIMENTAL AND APPLIED SCIENCES displayed in only one location—on one line of a four-line group, all sharing the same color, identical or at least nearly identical font size and style, and left-hand and right-hand justification.
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The proximity of the proposed trademark to the company’s physical address, phone number and web address further convinced the Board that the mark was being used merely as a trade name. The fact that the mark is in bold was not persuasive. The Board affirmed the decision of the Examining Attorney. The TTAB decision was based on the specific evidence and circumstances presented, which should serve as a reminder for applicants to carefully consider how their proposed marks are perceived by consumers and whether they function as trademarks indicating the source of goods or services.
— Adam G. Garson, Esq.The post <a href="https://garson-law.com/trade-names-or-trademarks/">‘Trade Names’ or ‘Trademarks’?</a> first appeared on <a href="https://garson-law.com">Adam G. Garson, Esq. | Lipton, Weinberger & Husick</a>.]]></content:encoded>
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<title>Trader Joe’s and the Long-Arm Reach of the Lanham Act</title>
<link>https://garson-law.com/trader-joes-and-the-long-arm-reach-of-the-lanham-act/</link>
<dc:creator><![CDATA[Adam Garson]]></dc:creator>
<pubDate>Mon, 26 Feb 2024 12:30:05 +0000</pubDate>
<category><![CDATA[Trademark]]></category>
<category><![CDATA[foreign country]]></category>
<category><![CDATA[Lahnam Act]]></category>
<category><![CDATA[trademarks]]></category>
<category><![CDATA[use in commerce]]></category>
<guid isPermaLink="false">https://garson-law.com/?p=2939</guid>
<description><![CDATA[If you thought that you were immune from prosecution for infringing a U.S. registered trademark in a foreign country, be forewarned. In late 2011, Michael Norman Hallatt, a Canadian citizen and U.S. Lawful Permanent Resident, began visiting a Bellingham, Washington Trader Joe’s (“TJ’s”) store several times a week to buy large quantities of Trader Joe’s […]
The post <a href="https://garson-law.com/trader-joes-and-the-long-arm-reach-of-the-lanham-act/">Trader Joe’s and the Long-Arm Reach of the Lanham Act</a> first appeared on <a href="https://garson-law.com">Adam G. Garson, Esq. | Lipton, Weinberger & Husick</a>.]]></description>
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<a href="https://garson-law.com/wp-content/uploads/2016/10/Trader-Joes-and-the-Lanham-Act.png"><img loading="lazy" decoding="async" class="size-full wp-image-6658 alignleft" src="https://garson-law.com/wp-content/uploads/2016/10/Trader-Joes-and-the-Lanham-Act.png" alt="trader joes and the lanham act" width="250" height="150" /></a>If you thought that you were immune from prosecution for infringing a U.S. registered trademark in a foreign country, be forewarned.
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In late 2011, Michael Norman Hallatt, a Canadian citizen and U.S. Lawful Permanent Resident, began visiting a Bellingham, Washington Trader Joe’s (“TJ’s”) store several times a week to buy large quantities of Trader Joe’s products. This caught the eye of TJ’s employees so Hallatt was questioned about his purchases. Hallatt admitted to taking TJ’s products to Canada for resale to Canadian customers. TJ’s later learned that Hallatt opened a store in Canada, which he named “Pirate Joe’s” where he resold marked-up TJ’s goods purchased in Washington state. Perhaps, believing that he was immune to suit from TJ’s for trademark infringement in Canada, he advertised his products with TJ’s trademarks and published a website displaying “Pirate Joe’s” using a font similar to that used in TJ’s trademarks. Hallatt’s chutzpah didn’t stop there. TJ’s demanded that Hallatt stop reselling TJ’s products and stopped serving him at the Bellingham store. Undeterred, Hallatt resorted to disguises and patronizing other TJ’s stores in Seattle, Portland and California, where he would not be recognized. Hallatt also paid others to purchase TJ’s products on his behalf. Clearly, this was a profitable business!
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TJ’s ran out of patience and sued Hallatt for trademark infringement and unfair competition under the <a href="http://www.bitlaw.com/source/15usc/" target="_blank" rel="noopener" shape="rect">Lanham Act</a> (U.S. Trademark Act) and Washington state law. The <a href="https://scholar.google.com/scholar_case?case=1570846152129171895&q=trader+joe%27s+hallatt&hl=en&as_sdt=6,39" target="_blank" rel="noopener" shape="rect">district court</a> dismissed the Lanham Act claims for lack of subject-matter jurisdiction because Hallatt’s allegedly infringing activity took place in Canada. The district court dismissed Trader Joe’s’ state law claims for similar reasons. TJ’s appealed to the <a href="https://garson-law.com/pdfs/Trader%20Joe's%20v.%20Hallatt%20-%209th%20Cir.pdf" target="_blank" rel="noopener" shape="rect">United States Court Of Appeals for The Ninth Circuit</a> on the question of the extraterritorial reach of the Lanham Act. In other words, TJ’s asked the court to determine whether the trademark act applies to infringing conduct that does not occur in the United States?
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The court’s short answer is, yes, it does but only if the plaintiff can establish a connection between the infringing activity and U.S. commerce. TJ’s, which recognized that simply reselling branded products is not illegal under the Act, alleged that Hallatt violated the act “by transporting and selling Trader Joe’s goods without using proper quality control measures or established product recall practices.” The court agreed such conduct had a direct effect upon U.S. commerce and also concluded that “Hallatt’s alleged attempt to pass as an authorized Trader Joe’s retailer could … harm Trader Joe’s’ domestic reputation and diminish the value of its American-held marks.”
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All this my sound very hyper technical but the bottom line is that making a buck on the back of a famous trademark may lead to serious consequences even if you’re doing business in a foreign country.
— Adam G. Garson, Esq.
*Orginally posted on October 18, 2016
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</div>The post <a href="https://garson-law.com/trader-joes-and-the-long-arm-reach-of-the-lanham-act/">Trader Joe’s and the Long-Arm Reach of the Lanham Act</a> first appeared on <a href="https://garson-law.com">Adam G. Garson, Esq. | Lipton, Weinberger & Husick</a>.]]></content:encoded>
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